Posts Tagged: "Licensing"

Will an Intellectual Property Licensing Exchange Work?

Preventing artificial supply-side constraints? Now my spidey-senses are activated. That sure has a familiar ring to it, doesn’t it? I am skeptical about the desire to eliminate market inefficiencies when combined with simultaneous attempts to drive down royalty payments, thereby compensating innovators only for some perceived benefit to the ultimate consumer. The goal of the first, to reduce inefficiencies in a bilateral licensing negotiation is laudable, but minimizing the “artificial supply side constraints” based on the market as viewed by the ultimate consumer is a recipe for undervaluing innovative value-adds. And let’s not forget that some (perhaps many) of these value-adds mean the difference between having desirable functionality or not, and having a viable product or not.

Lifetime Brands to Host Inventor Open House May 31, 2012

In addition to key executives from Lifetime Brands, on hand for the day will be Warren Tuttle, Lifetime Brands External Open Innovation Director and President of the United Inventors Association. Steve Greenberg, author of Gadget Nation and host of Food Network’s television program “Invention Hunters” will also be at the event to meet and greet inventors. I personally know both Warren and Steve and they are certainly two of the good guys in the industry. Therefore, I am happy to recommend this event to inventors.

The Smart Phone Patent Wars: What are FRANDs For?

In all cases, the IEEE, JEDEC, ITU and TIA policies apply to both issued patents and pending applications (regardless of whether such applications are published). Further, all four policies make clear that the SSO will not get involved in the particulars as to what constitutes FRAND licensing practices. Interestingly, and for those paying attention, the IEEE, JEDEC and ITU policies require disclosure of essential patents, whereas the TIA policy simply encourages disclosure of essential patents. Again, there simply is no generally-accepted test to determine whether a particular license offer satisfies the reasonable aspect of an SSO participant’s FRAND commitment. How does this play out in practical terms? A recent case is instructive.

Book Review: Making Millions with Your Invention

The overarching theme of this book is to approach inventing in a business responsible way, so Janessa had me on page 1. Many who are unfamiliar with the trials and tribulations of inventors frequently fail to realize that inventors are highly intelligent and very creative. But like all intelligent and creative individuals engaged in a project, they need direction. She guides inventors in gentle, but firm ways, explaining what might otherwise seem obvious, but when you work with inventors daily you realize business savvy and prowess is not always where inventors excel. So when Janessa starts by explaining the importance of time management, scheduling and meeting promised deadlines she demonstrates an uncommon level of understanding with respect to both the questions inventors have and the knowledge they absolutely need to know to succeed.

Are Some Patent Holders More Equal Than Others?

What’s troubling is that Hewlett Packard itself, the original startup headquartered in a garage, was one of the earliest and most-respected leaders of the 20th Century high-tech revolution that had its epicenter in Silicon Valley. It was William Hewlett who gave a 13-year-old Steve Jobs spare parts for a device Jobs was building — and a summer job as well. And it was Mr. Hewlett and his executive heirs who insisted that HP conscientiously patent its breakthrough innovations and fight against those that infringed those patents. HP today earns hundreds of millions of dollars annually by licensing its patent rights to others — according to IAM magazine, “at any one time, HP has about 150 licensing transactions in process.” And as the court dockets show, it certainly isn’t shy about filing suit against infringers who refuse to take a license.

Are Patent Wars Good for America?

In short, today’s smartphone patent wars are simply “back to the future” when it comes to how disruptive new industries are developed. Every major technological and industrial breakthrough in U.S. history — from the Industrial Revolution to the birth of the automobile and aircraft industries on up to today’s Internet and mobile communications revolutions — has been accompanied by exactly the same surge in patenting, patent trading, and patent litigation that we see today in the smartphone business. This is how the rights to breakthrough new technologies have always been distributed to those best positioned to commercialize them — to the benefit of the whole nation in terms of new jobs, new medical advances, and new products and services.

Patent Mass Aggregators: The Giants Among Us

The types of returns promised to investors and the types of benefits offered to participants are also quite different from garden-variety non-practicing entities, as are some of the tactics used in organizing the entities and in asserting the patents. Finally, the scale itself is simply mind-boggling. Mass aggregators operate on a scale and at a level of sophistication and complexity that would have been unimaginable a decade ago. They have taken the prototype strategies pioneered by a prior generation of non-practicing entities and changed them into some of the cleverest strategies yet seen in the intellectual property rights field.

USPTO to Host Inventor Symposium at Smithsonian Oct. 27-28

Whenever I write about USPTO conferences, symposia and events for independent inventors I say: “Simply stated, if you are a serious inventor you need to go to this Conference.” I really do believe that is true. You will be amazed at how much useful information you can obtain, and meeting up close and personal with successful inventors and government Officials is both educational and inspiring. It is sometimes easy to feel all alone as an independent inventor, facing a huge faceless bureaucracy as you attempt to do something that few of your friends and family really understand. These events that cater to the independent inventor help you realize you are not alone and while the USPTO is a government agency — even a bureaucracy — there are dedicated people up and down the chain of command who really care about innovation and want to help independent inventors. So be prepared to learn and be prepared to be inspired. Also come armed with ideas and suggestions. USPTO officials genuinely seem to want to hear what independent inventors are thinking and what they would find useful in the future.

Jobs Council Seeks Open Source Approach to Tech Transfer

It would be bad enough if politicians did nothing once elected, but it seems that they have a knack for doing those things that will do the most harm. That is why one of the recommendations in the interim report has me rather concerned. On page 21 of the report the Jobs Council recommends: “the Administration should test an ‘open source’ approach to tech transfer and commercializations.” What does that even mean? It might sound good to some, and certainly is the “in thing” to recommend I suppose. After all, “open source” is the solution to all the problems of the world, right? Never mind that the open source community has yet to identify a long term, stable business model that makes money.

Shooting Ourselves in the Foot

Contrary to the tone of the Jobs Council report, U.S. academic technology commercialization made possible by Bayh-Dole is a world- wide recognized success. The law allowed universities and small companies to own and manage inventions arising from federally supported R&D. It decentralized technology management from Washington, allowing a market driven system to flourish. It did not create any new bureaucracy to select winners and losers. And it works in the hard, cold light of day.

Android Woes: IV Sues Motorola Mobility for Patent Infringement

So here we are, many years later and IV’s philosophy seems to have changed. No longer is litigation a poor way to monetize patents, but rather IV sees itself as having a responsibility to litigate. The self-righteousness of IV’s claims is why they engender such distrust, even bordering on hatred. For so long they came in peace and now that they have the leverage they seem to be playing a different tune, and using patent litigation with greater frequency. They accumulated patents over time, sometimes getting as much as $50 million from companies like Google, eBay, Sony, Intel, Microsoft, Apple, Nokia and others, ostensibly for the purpose of obtaining a defensive patent position. Oh how the tables have turned.

Patent Illustrations and Invention Drawings, What do you Need?

Over the years I have worked with many inventors as they seek to move forward with their inventions. As a patent attorney it is no great surprise that the overwhelming number of individuals I have worked with are interested in filing a patent application and ultimately obtaining a patent. Filing a patent application necessitates have drawings to include in the application, but patent drawings are not the only type of “drawings” that an inventor should be considering. Patent illustrations are wonderful for a patent application, but they don’t always do the invention justice if you are trying to capture the attention of a prospective licensee, or if you are trying to convince a buyer to place orders or sell the invention in their store.

Beat the Odds: How to Get Your Invention Licensed

Many inventors believe the way to get a company interested in their inventions is to write a letter – and then hope they receive an invitation to begin negotiations. This seldom happens. If you want to get your invention licensed and receive royalty payments, you have to deliver more than a “me too” product.

A Limited Run: Testing the Market Without Going Broke

Licensing your invention is a lot easier if you can show that it’s selling. That means you have to produce a small quantity of your product. Nice idea – until you learn that a plastic injection mold costs $25,000. Now what? Fortunately, there are options. You just have to know where to look.

Drafting a Licensing Agreement, A Patentee Perspective

You might want to consider some type of up front guaranteed payment to ensure that you get at least something. This may seem overly pessimistic, but it is the job of any attorney negotiating or drafting a license to assume that things will go wrong. The agreement can never contemplate everything, but with respect to payment you need protection. What if the licensee is paying you a defined percentage of sales but then decides to offer your product for free, or as an add-on to a sale, as is common in direct TV marketing? If your product is used as a “come on” and given away for free even 100% of $0 is still $0. That is why some type of minimum payment can be quite beneficial.